The patent process is anything but predictable. The road to issuance can be bumpy as new challenges arise and patent practitioners are forced to make important prosecution decisions.
Often, these decisions come about when an examiner issues a final office action. It is then that a practitioner must decide between a Request for Continued Examination (RCE) or an appeal to keep the patent application alive. Many patent practitioners elect for an RCE based solely on the fees involved, but whether an RCE is actually the better choice requires the consideration of many factors.
1. Know Your Examiner
It is important to remember that each examiner is unique, and looking over your examiner’s prosecution history can be helpful in deciding how to prosecute your application. Examiner-specific data analysis using software such as LexisNexis PatentAdvisor® can save you both time and money in prosecuting an application.
The new standard in patent examiner analytics, PatentAdvisor ETA™, is based on a complex algorithm that takes into account several sources of data and assigns a numerical value to each USPTO patent examiner. One reason ETA is the most accurate and predictive metric available is because it factors in the examiner’s entire pending portfolio, not just granted and abandoned cases. The ETA metric is instantly identifiable, reflected as a color-coded range of numerical favorability with red being less favorable and green being most favorable..
When the time comes to choose between an RCE and an appeal, knowing your examiner’s overall application allowance rate can mean all the difference. If you have been assigned an examiner with a high ETA, it may be more advantageous to appeal to the Patent Trial and Appeals Board (PTAB) rather than to allocate resources to reconsideration by your examiner. Alternatively, if your examiner has a low ETA, it may be worthwhile to pursue an RCE for another chance to convince your examiner that your application should issue as a patent. The PatentAdvisor platform provides users with a variety of patent statistics that shine light on which choice is more likely to result in a favorable outcome, including appeal, RCE and rejection specific data for each examiner.
2. Assumptions Can Be Costly, and So Can RCE’s
Practitioners often prefer RCE’s because the appeal process has become synonymous with high costs and long delays. The price of appeal can be hard to justify since filing an RCE costs less than half as much as the combined filing fees for a Notice of Appeal and an Appeal Brief. However, the fact that a single RCE costs less in filing fees does not mean that an RCE will be effective or even that an appeal will be more expensive. By analyzing an examiner’s RCE and appeal statistics, you can determine the best next step for your application.
High application allowance rates after RCE’s could mean that filing an RCE is a worthwhile prosecution strategy, but, if several RCE’s are usually required before allowance, then pursuing an RCE may end up being just as expensive as filing for appeal. Moreover, if there is a significant number of RCE’s in your examiner’s backlog, then pursuing an RCE over an appeal may not even save you time.
3. An Appeal May Surprise You
A patent examiner’s appeal statistics may also give you valuable insight. Data showing that your examiner’s final office actions are frequently reversed by the PTAB may indicate appeal will be effective. When considered alongside your examiner’s unfavorable RCE statistics, you may decide that an appeal should be filed sooner rather than later. In some cases, you may even be surprised to find that the mere filing of an Appeal Brief is likely to result in quick allowance by your examiner, and that going through the entire appeal process is unlikely.
4. Preventing Either May Be An Option
The medical world knows that “an ounce of prevention is worth a pound of cure,” and the same holds true of patent prosecution. Patent analytics can be used pre-filing to determine which art units are most likely to examine a particular patent application, and to determine which of those art units are the most applicant-friendly. PatentAdvisor shows users many different types of art unit data, including an art unit’s allowance rates, prosecution times, and RCE and appeal statistics. PatentAdvisor provides the ETA Distribution™, which communicates the proportion of patent examiners in each art unit that have low, medium, or high ETA values so users can gain a quick sense of an art unit’s makeup. In addition, the Lottery Map™ shows the probability of being assigned to examiners of particular difficulty levels based on the ETA Distribution in an art unit and the rate at which each examiner in the art unit processes applications. With that information, patent applicants can leverage LexisNexis PathWays™ to tailor their applications to improve their chances of being assigned to tech center group that is more applicant-friendly.
Patent prosecution decisions are rarely straightforward. Developing an efficient prosecution strategy requires that you have the information you need to make informed decisions. PatentAdvisor provides you with the tools and data you need to make informed prosecution decisions. From pre-filing to post-issuance, PatentAdvisor provides insight, not available anywhere else, to save you time and money.
Get to know your examiner better with more context and a deeper understanding of your examiner’s behavior than ever available before.
With your free trial, you will gain instant access to:
Examiner Search allows you to search by examiner name for a filterable, examiner specific dashboard of patent analytics, including rejection specific statistics, appeal statistics, prosecution statistics, interview statistics, a backlog of RCEs and timeline.
QuickPair easily replaces the USPTO Public PAIR by providing the most robust application details anywhere, including examiner timeline, examiner allowance rate and the average time and number of office actions to allowance.
PatentAdvisor, the first-ever data-driven patent strategy tool, provides a systemic approach to crafting an effective prosecution strategy. Understand why certain patent applications take longer than others to reach allowance—then use that knowledge to devise better patent prosecution strategies.